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Bifurcation in the UK courts?

The usual course in the UK is for patent infringement and validity proceedings to be heard together. Often one is a counterclaim to the other. However, sometimes the relevant parties to each claim are different and there may be reasons to proceed with validity and infringement separately. British Gas Services Ltd v VanClare SE LLC (17 June 2015; extempore; unreported) is a case where the flexibility of the UK courts was tested.

British Gas brought patent revocation proceedings in the Intellectual Property Enterprise Court (IPEC) against VanClare’s patent relating to “Smart Meters”. Prior to any defence (or counterclaim) by VanClare, separate infringement proceedings were started in the High Court against British Gas. These proceedings were by a separate entity (an exclusive licensee) controlled by the same person as VanClare. VanClare then applied for the IPEC revocation proceedings to be transferred to the High Court to be heard alongside the infringement proceedings.

Procedurally this was not unusual as each party will have different views on the best forum for their case – the more straightforward IPEC procedure, or the more rigorous High Court approach to patent litigation.

In the event, the revocation action could be heard as quickly in the High Court as in the IPEC (the IPEC has been so successful there is now a delay in listing trials). Therefore, British Gas, which wanted a speedy resolution, did not oppose the transfer. However, it applied for the revocation action to be heard first and a stay of infringement proceedings pending the outcome. British Gas argued that the revocation case was simpler than the infringement case and so could be ready for trial earlier.

Arnold J (sitting in the IPEC) confirmed that the UK Court could order the issues to be heard in whatever order was convenient: validity could be heard first or infringement, or both together. Arnold J also said the onus on an applicant was not a heavy one, but they do need to provide good reasons why it was better to vary the usual practice.

In this case, the delay to the patentee’s claim for infringement was good reason not to bifurcate and the differences in readiness or complexity of the two cases was not sufficient to require separate trials. Arnold J said that normal case management would allow both issues to be heard together in accordance with the usual UK practice – the revocation case was subsequently transferred to the High Court.

Looking to the future, it is hoped that the new UPC procedure will allow the same flexibility as offered by the UK courts while also adopting the usual course of hearing validity and infringement together.

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